Entitlement to file trademark application examined in CORONA Case
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In Cerveceria Modelo SA de CV v Marcon (August 12 2008, only recently published), Cerveceria Modelo SA de CV, the manufacturer of Corona beer, successfully opposed an application to register the trademark CORONA for use in association with certain beverages, including fruit juices and sports drinks, and beverage bottling.
The opposition was based not only on the likelihood of confusion between the mark applied for and Modelo's trademarks, but also on the failure of the applicant, Robert Victor Marcon, to comply with Sections 30(e) and 30(i) of the Trademarks Act. These provisions require an applicant to demonstrate that it has a good-faith intent to use, as well as a belief that it is entitled to use, a trademark in Canada in association with the goods and/or services described in the application.
An applicant must comply with Section 30 of the act both formally and substantively. In the present case, Marcon complied with Sections 30(e) and 30(i) formally by including the required statements in its application. The question of interest in this opposition was thus whether Marcon had complied with Section 30(i) substantively (Modelo did not meet its evidentiary burden on the Section 30(e) ground, so Marcon did not need to answer the question of whether he was in substantive compliance).
With regard to Section 30(i) of the act, the Trademark Opposition Board considered that Modelo had successfully raised doubt as to Marcon's intent when he made the required statements in his application. In particular, as Marcon had filed applications for 18 other well-known marks for related goods and services, the board questioned "how any reasonable person would be satisfied that he/she was entitled to file trademark applications for [such marks]". Further, the board noted that Marcon:
- had failed to approach a manufacturer to produce any of his applied-for goods, with the exception of bottled water (and possibly coolers); and
- indicated in his testimony that he understood that it was inappropriate to file his original CORONA application for beer.
In light of the foregoing, the onus shifted onto Marcon to prove that his statements were true and made in good faith when he filed the application.
Marcon produced as evidence two inactive trademark applications and patents for dental floss and a fuel tank product. Although the board recognized that Marcon may have spent time and effort developing these products, it found that he had not shown that:
- he was satisfied that he was entitled to file the application for the mark CORONA for the goods and services at issue; or
- his intentions were in good faith when he did so.
Accordingly, Modelo succeeded in its opposition based on Section 30(i).
Finally, the board concluded that there was a likelihood of confusion between Marcon's and Modelo's marks due to:
- Modelo's extensive reputation in its mark in association with beer;
- the fact that the marks were identical; and
- the fact that the goods were related.
Therefore, Modelo also succeeded on this ground of opposition. Marcon's application was thus refused.
Chad Matheson, Cameron MacKendrick LLP, Toronto
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